Federal Circuit cites Alice in invalidating Intellectual Ventures patents
The US Court of Appeals for the Federal Circuit has upheld two lower court judgments after invalidating two software patents owned by Intellectual Ventures (IV) and ruling that a third was not infringed by Capital One.
IV had appealed against the US District Court for the Eastern District of Virginia’s 2014 decision that said the two patents owned by IV and asserted against the financial services company were invalid.
The year before, the same district court ruled that a third patent IV had asserted against Capital One was not infringed by the company.
The federal circuit upheld both rulings yesterday, July 6.
One of the patents that was invalidated, US number 8,083,137, covered a system of budgeting online, which presented the user’s total spending and ensured he or she stayed within established spending limits.
The other, US number 7,603,382, protected a method of providing information to a user on how many web pages he or she visited.
In both instances the court said the patents covered “abstract ideas”.
Issuing its judgment, the federal circuit cited the US Supreme Court’s 2014 decision in Alice v CLS Bank, which said that patents covering “abstract ideas” should be invalidated and that the online application of such ideas does not make them a novel concept.
The federal circuit said that the ‘137 patent covered a method that “could still be made using a pencil and paper” and that the ‘382 patent was directed to “steps that do nothing more than spell out what it means to apply it on a computer”.
The third patent, US number 7,260,587, which is still valid, covers a method of organising digital images that have been scanned from hard copies.
IV and Capital One’s dispute over the third patent hinged on the phrase “associated machine readable instruction form”.
Capital One argued that the instructions for using the technology were required to be in a hard copy format.
IV argued that the claim covering instructions also covered electronic copies.
In yesterday’s judgment, the federal circuit reaffirmed the district court’s ruling that the claims only cover hard copies and that Capital One had not infringed the patent.
“In light of the claim language, the specification, and the prosecution history, we conclude that a person of ordinary skill in the art would have understood the claim as requiring the machine readable instruction form to be in a hard-copy format,” the court concluded.
Neither IV nor Capital One had responded to a request for comment at the time of publication, but we will update the story should either company get in touch.
